Appeal No. 2006-1873 Page 12
Reissue Application No. 08/058,163
clearly and fully explained. For example, one might guess that the position of the
examiner is that the reissue claims are product-by-process claims and that the product
produced by the process described in the Ciba-Geigy reference is the same or
substantially the same as the claimed product. However, the examiner has not clearly
explained her position and we will not guess what it is. In a similar vein, it appears that
appellants are arguing that in situ polymerization produces a different polymeric matrix
from that described in the Ciba-Geigy reference and/or that the physical state of the
pheromone in the claimed composition is patentably different from the physical state of
the pheromone in the Ciba-Geigy composition. Again, we will not guess what
appellants’ position is.
Fifth, the Office action mailed 16 May 1994 (Paper 7, pp. 2-4) suggests that the
original patent claims were deemed to be allowable over the Ciba-Geigy reference once
the term “solid” was introduced before the term “pheromone.” Therefore, the examiner
should take a step back and assess whether claims which have removed the express
requirement that the pheromone of the claimed composition be a solid pheromone are
patentable over the Ciba-Geigy reference. The examiner should also consider whether
or not appellants are estopped from claiming compositions comprising liquid
pheromone.
Finally, according to the Ciba-Geigy reference, among the “best known
processes for making compositions useful as permanent diffusers in which an active
liquid material is distributed in a homogeneous fashion in a polymeric matrix” (p. 1, ll.
61-65) is a process wherein
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